200 F. 411 | 2d Cir. | 1912
Dissenting Opinion
(dissenting). The dismissal of the bill by the District Court upon the sole ground of non-infringement, for the reason that the claims in question relate to a projector, whereas defendant uses a camera, presents a question which may be broadly stated as follows: Should these claims, the language of which covers a feeding mechanism which is capable of being used in the defendant’s camera, as well as in the projector described in the patent, be so limited that they cover the use of the feeding mechanism in the projecting, apparatus only ?
- 'In approaching the consideration of this question it must be remembered that the claims in controversy are not, so far as their language is concerned, limited to any particular machine and that the combinations described are as capable of use in a camera as in a projector. So far as the combinations which we are now considering are concerned, they might as well have been illustrated in a camera as in a projector and the description and drawings might as well have been confined to a camera as to a projector. The machine can be used as well to take pictures as to project them upon a screen. I do not understand that this proposition is seriously disputed. The camera and the projector belong to analogous arts and can be used interchangeably in each. Take from the projector the well-known parts, the objective, the-condenser and the light, which are intended to throw the pictures in rapid succession upon the screen, and a successfully operating camera remains. Add these parts to the camera and the result is a machine capable of exposing the pictures to an audience.
The defense here, as Í understand it, is predicated of the proposition that Latham’s achievement must be rigidly limited to a projecting device and though he may have made a meritorious invention of a camera, he is nevertheless limited to his title of “Projecliug-Kineto-scope.” If this contention be sustained, any one can use the exact structure shown, provided he does not use it in a projecting machine. I am unable to assent to this proposition. It is a fundamental canon of construction of patent law that where the court is convinced that the patentee has made a valuable invention, the patent shall be interpreted, if possible, to give him the full results of his labors. lie may have so entangled himself in a maze of contradictory verbiage that it is impossible to do this, but if two constructions can be given his claims, it is the duty of the court to adopt the one which vitalizes rather than the one which destroys them.
The inventor is entitled to all the uses to which his invention may he put and the court should, if possible, see that he secures its full benefits. He should not be impaled on the point of a too literal construction. In the present instance I see no reason why Latham, if it he shown that lie was the first to invent the improved camera, should not reap the rewards of this division of his invention. His claims cover it and there is nothing in the description which definitely limits its use to the exposing rather than the taking of pictures. If these claims do not cover a camera what do they cover ?
Take the first claim, for instance. Construct a machine in exact accordance with the directions of the specification and having all the elements of the claim, what will be the result?
Such a machine will contain: 1. Devices for supporting the bulk of a flexible film before and after exposure. 2. Feeding mechanism located between the devices for supporting the film and separate and distinct therefrom. 3. One of said feeding mechanisms being constructed to feed the film uniformly and produce a predetermined supply of slack. 4. The other adapted to feed the slack intermittently across the exposure-window. Would such a machine project pictures upon a screen? Hone of the necessary accessories of such a machine is included in the combination. The condenser, the objective and the light are not elements and the use of the combination as a projector is not mentioned. What is to be done with such a machine ? It cannot be used as a projector, for it has not the necessary parts, and, if the defendant he correct, it cannot be used as a camera because the patent must be limited to a projector. I cannot think that the pat-entee should be left in this dilemma with a claim practically valueless — a derelict of the patent law. On the contrary, I think that Latham invented a machine capable of use as a camera, that he has described this machine in his specification, illustrated it by his drawings and covered it by his claims.
In short, my conclusion, upon this branch of the case, is that if Latham has invented a new and useful camera, he cannot be defeated upon the theory of non-infringement because he described and illustrated his invention in a projector.
The patent should be construed with reference to what the description shows and the claims cover and not according to the title forced upon the applicant by the examiner.
As was said by the court in Bell v. Daniels, 1 Fish Pat. Cas. 372, Fed. Cas. No. 1,247:
“The plaintiff is not controlled by his title, but the patent, specification and drawings are all to be examined, and are all to have a fair and liberal construction in determining the nature and extent of the invention.”
See, also, Inman v. Beach, 71 Fed. 420, 18 C. C. A. 165; Hobbs v. Beach, 180 U. S. 385, 21 Sup. Ct. 409, 45 L. Ed. 586; Cleveland Foundry Co. v. Detroit Co., 131 Fed. 853, 68 C. C. A. 283.
The contention that the words, “In a projecting-kinetoscope” should be read into claims which do not contain them is wholly untenable both as an original proposition and also because the courts have repeatedly held that such limitations of the claims are unwarranted. An inventor cannot anticipate every use.to which his invention may be put and is not -called upon in limine to deprive himself of such uses by putting his invention in a strait-jacket.
The employment of Latham’s combination as a camera did not require invention; any mechanic skilled in the art would know enough to do this. It was simply applying it to a different, though analogous, use.
It has been assumed through all stages of this litigation that a camera could be used as a projector and vice versa. Thus the Court of Appeals of the District of Columbia says:
“A picture-taking camera, like many of those heretofore referred to as patented, could undoubtedly be utilized as an apparatus for exhibiting pictures also, by substituting a picture film in the carrying device and then applying the apparatus of the magic lantern.”
The District Judge also says that claims 7 -and 9, as originally filed, “are equally applicable to a camera as to a projecting machine.”
I have thus far proceeded upon the hypothesis that Latham was the first to make the invention which is the subject of the claims in controversy.
The invention consists of a film-feeding mechanism operated by continuously rotating sprockets, a loop being produced and maintained in the slack film. Also a sprocket, rotating intermittently, which feeds the slack loop across the optical axis section by section. It is described in the specification as consisting in employing “means for bringing each picture to rest at the moment of projection, means for reducing the strain the picture-film would, otherwise suffer from the
The invention introduced a decided improvement to the art and one which can be used with equal advantage in a projector and a camera. If it were a new and useful improvement as to one, it was equally so as to the other.
Bearing in mind that the invention with which we are concerned consists of the apparatus which produces this intermittent movement of the film across the exposure opening, I am unable to find any proof in the record which anticipates.
Latham’s application was filed June 1, 1896. His invention was made on or prior to February 26, 1895, and was put into practical operation on that date, as a camera, its use as a projector having been also demonstrated.
The complaint admits that the invention of Latham was shortly after February 26, 1895,
“invented independently in France by M. J. II. .Toly, who used it both in cameras and projectors, and still later in the year 1895, in this country, by Thomas Arrnat. who used it exclusively in projecting machines.”
This admission undoubtedly anticipates the filing date of June 1, 1896, and throws upon the complainant the burden of establishing the date of the invention at a period anterior to the dates of the Joly and Armat structures. This has been done. I do not deem it necessary to discuss the testimony in detail because it fully establishes the fact of the completion and reduction to practice by Latham, on the evening of February 26 or the morning of February 27, 1895.
The defendant took no evidence on this issue. It is asserted that the evidence is insufficient because the device relied on was not a projector, but a camera. I have already shown that the two devices were used interchangeably and, where it appears that the inventor was the first to make the precise structure which he now claims, it is not material what he called it or how he first used it in the moving picture art. He was entitled to any use to which it might be legitimately put in that art.
The testimony does not bear out the defendant’s other contentions that the adaptation and use of the device as a projector is not satisfactorily established, that it was an abandoned experiment and was not the work of Latham, but of his mechanic, Eugene Lauste.
The conception was Latham’s, worked out and made operative by skilled mechanics employed by him. ’
Latham says:
•‘When the idea came into my head * * * it was necessary for me to get the help of shilled mechanics.”
It would be necessary to ignore arbitrarily the testimony in order to reach a conclusion that some one other than Latham conceived the invention. If Latham conceived it, the fact that he employed others to embody his idea in a working machine does not deprive him, and his assigns, of the fruits of the invention.
It would seem to be an exceedingly harsh doctrine to hold that when one has invented a complicated and delicately organized machine, consisting of a combination of reels, drums, pulleys and sprockets, designed to manipulate the film; invention and infringement must depend upon the color or length of the film. The combination is the same whether the film is impressed with the pictures while passing through, or whether the same film with the pictures completed is passed through.
If the camera of February 26th did not embody the invention in issue, nothing could do so, it was the invention in issue.
The Edison patent No. 493,426 shows a continuously moving film with no intermittent motion. The Edison patent No. 589,168 is for a “Kinetographic Camera.” He says: •
“The purpose I nave in view is to produce pictures representing objects in motion throughout an extended period of time which may be utilized to exhibit the scene including such moving objects in a perfect and natural manner by means of a suitable exhibiting apparatus, such as that described in an application filed simultaneously herewith (patent No. 493,426, dated March 14, 1893). X have found that it is possible to accomplish this end by means of photography.”
The complainant’s expert, Mr. Waterman, asserts, and I see no reason to differ from him, that the apparatus here described can be used equally well for taking pictures and projecting them. It comprises a supply and a take-up reel with an escapement between them having a sprocket wheel engaging the holes perforated at regular intervals on the two edges of the firm to feed it along intermittently across an exposure opening.
There is not, however, the distinguishing characteristic of the Lath-am patent, the second feeding mechanism which continuously maintains a loop and relieves the pressure on the intermittently feeding sprocket.
Thomas Armat testifies that the Edison Company began to put out projecting machines in the fall of 1896 or the spring of 1897. He says:
‘‘These last mentioned machines, however, at this date did not at first embody the feature of providing slack between the supporting reel and the intermittently moving device, and they had a very short life as thus put on the market.”
The problem I am now considering was solved, not by Edison, but by Latham.
The Chinuock camera, assuming it to have been completed and operative prior to tiie Latham invention, which proposition is disputed and in doubt, does not anticipate for reasons similar to those just above stated regarding the Marcy camera. The film is advanced by continuously driven friction rolls, and is arrested and released by a damp intermittently operated. There is also a pair of friction rolls below the exposure opening; they are of a greater diameter than the upper rolls and revolve at a higher speed but are arranged to slip over the film when it is clamped. The function of these rollers is to pull down a certain amount of film and they are, therefore, made larger in diameter and are driven at a higher speed. With the addition of these rolls, the Chinnock device is substantially similar to the Marcy device, ft does not have the essential features of the Latham invention, as before pointed out, viz., the loop of slack film produced by the film-feeding mechanism operated by continuously rotating sprockets together vcith an intermittently operating sprocket which feeds the slack across the exposure window.
I do not deem it necessary to refer to the friction roll printing press patents further than to say that I consider them as belonging to a different art and much more remote than the patents already considered.
The complainant is criticised for “reading into the claims” the sprocket type of feed but as the claims must be construed in the light of the specification and as the description describes the sprocketed feed drums, the teeth of which engage the holes in the films, and as the drawings clearly show these features, I see no just basis for the criticism.
It is also charged that the complainant has been guilty of laches in permitting infringements to proceed during five and a half years which elapsed after the patent was issued. Undoubtedly there was this delay, but in view of the protracted litigation which had impoverished the then owners of the patent, I cannot find that this delay amounted to laches. Under its present owners infringers have been vigorously prosecuted and it is alleged that all of the infringers have taken out licenses under the patent.
The patent encountered unusual vicissitudes from the moment the application was filed and its progress through the Patent Office met with opposition and discouragement at almost every stage. I cannot find, however, that anything occurred there to deprive Latham of his invention. The issue in the interference between him and Armat was a narrow one, and though it was decided in favor of Armat, it is plain that this occurred because of the restricted scope of the issue between them. No one can read the decision of the Court of Appeals without
“We are free to confess in. this case, that, the inspection of the original machine, and the proof of its efficient performance in intermittently moving the film for the taking of pictures, in connection with the evidence of the first private trials in exhibiting pictures, has strongly inclined us to decide in favor of its reduction to practice.’'
But they were unable to do this because of “all of the limitations and requirements of the issue.” If the questions had been those with which we are now concerned, I am persuaded that the court would have reached a different conclusion. I am not convinced that Latham’s conduct in the Patent Office was unfair or disingenuous, unless persistent and untiring effort to secure what he believed to be his rights can be so characterized. He fought on until he secured claims which covered not a different invention, but the invention which he had reduced to practice in February, 1895. I am convinced that Latham made a valuable invention, not an epoch-making invention, it is true, but one which introduced a much needed improvement into the motion picture art. It remedied the difficulties which had baffled inventors of unquestioned genius and placed the art upon a successful commercial basis. In such circumstances, it is, in my opinion, the duty of the court to save rather than to destroy the patent.
For these reasons I am unable to concur in the disposition of this appeal by the majority of the court. I think that the decree should be reversed and the cause remanded to the District Court with instructions to enter a decree in favor of the complainant with costs.
Lead Opinion
The majority of the court are of the opinion that the decree appealed from should be affirmed, with costs, upon the opinion of Judge Hand; and it is so ordered.
